India: Trademark Protection For Buildings: Taj Mahal Palace, Now A Registered Trademark

INTRODUCTION

On May 19, 2017, the Indian Hotels Company (IHCL) created history by securing a trademark registration for the exterior design of the Taj Mahal Palace Hotel. While securing trademarks for buildings are a common phenomenon around the world, the iconic landmark of Mumbai is the first of its kind in India to get a registered trademark under its hood. Other famous landmarks that are registered as trademarks are the Empire State Building in New York, the Eiffel Tower in Paris, Sydney Opera House in Australia to name a few.

The primary reason behind securing trademarks for buildings is to protect copycat architecture and protect the unique design of the building and preserve its uniqueness and heritage. Buildings satisfy the dual test of graphical representation, along with the capability of functioning as an indication of source and are hence eligible for trademark protection. By registering buildings as trademarks, the proprietors also attempt to control and limit the depictions of those landmarks in artistic works, pictorial representations, unfair commercial use etc.

Another reason for securing a trademark for the iconic structure can be that the IHCL wanted to protect the structure from being used in productions that could tarnish and dilute the image. For example, if an alcohol manufacturer would put the design of the Taj Mahal Palace Hotel on its whisky bottles, it could tarnish the reputation of the building and dilute its trademark status.

Now that the building is successfully registered as a trademark, the IHCL has the following powers in relation to the building:

  1. Nobody can use the trademarked image for commercial purposes without a license from the company. Selling any object with the trademarked image on it will be considered as an infringement action.
  2. Any sort of commercial use will be with the permission and may include the payment of a licensing fee to the company.

The IHCL had sought registration for the iconic building under Class 43 for the following services namely, "services providing food and drink; temporary accommodation".

A pertinent question that can be raised here is why the IHCL chose to secure a trademark registration rather than a design or copyright registration. Copyright registration only protects the aesthetic value of the building; design registration only helps in increase of commercial revenue generation. A trademark registration on the other hand however, not only increases the commercial revenue generation through licensing, it also signifies that a particular landmark denotes the source or acts as a source indicator while also protecting the distinctiveness of the landmark. Also, the term of protection of a trademark is much longer than that of a copyright or design protection.

REQUISITES TO BE FULFILLED BY A LANDMARK BUILDING TO BE ELIGIBLE FOR REGISTRATION

  1. It must be used on or in connection with the promotion and sale of goods and services, or displayed on materials used in offering the goods or services for sale, rather than merely as a landmark per se.
  2. The public must recognize such building or landmark as indicating and designating the source of particular goods or services.

Thus, trademark protection "cannot be enforced in the absence of evidence that the public recognizes it and associates it with the owner's services."

LEGAL PRECEDENTS:

  1. In the case of Rock and Roll Hall of Fame and Museum v. Gentile Production,1 the Museum's build ing design was registered with the State of Ohio and the United States Patent and Trademark Office as a trademark. Photographer Charles Gentile took a picture of the Museum against a colorful sunset and began selling the photograph as a poster. The Museum filed a lawsuit against Gentile over the depiction of the Museum in the poster. The court in this case said that "in order to be protected as a valid trademark the building must create "a separate and distinct commercial impression which . . . performs the trademark function of identifying the source of the merchandise to the customers."

    However the Museum could not produce evidence to demonstrate that the public actually identified the building as a trademark. If the public does not rely upon the landmark to identify the source then the landmark cannot be held to be a trademark and thus it cannot be registered.

  2. Another interesting case is that of ESRT Empire State Building, L.L.C. v. Michael Liang2, the Empire State Building LLC, owns federal registrations for the word mark EMPIRE STATE BUILDING for observation deck, sightseeing and real estate services, as well as design mark registrations for the same services for this two dimensional depiction of the building exterior. The respondent's company used the picture on their beer bottles without the official permission or any form of licensing agreement form the ESRT. The beer logo in this case belonged to trademark applicant Michael Liang who applied for the trademark on January 8, 2011 with the intent to use the mark in commerce for alcoholic and non-alcoholic styles of beer. The Trademark Trial and Appellate Board found that ESRT's mark is "famous for purposes of dilution", that its mark is inherently distinctive or acquired its distinctiveness through its exclusive use of its mark and have a "strong degree of recognition. After considering all the evidence found, the Trademark Trial and Appellate ruled that applicant's mark is likely to cause dilution by blurring ESRT's mark, hence ruled in the ESRT's favor.

THE ROAD AHEAD:

Now that the Taj Palace Hotel is a registered trademark, no one can use the image of the building for any commercial purpose. If any individual or entity wants to use the image on any of their products, they will have to get a license from IHCL.

Few articles online have criticized this move of IHCL and stated that by getting trademark registrations for landmark buildings , the IHCL is curtailing the right of the public to cultural heritage by not allowing even pictures of the Taj Palace to be depicted on t-shirts and photographs. It is to be kept in mind here that getting a registered trademark for the image does not take away the right of citizens from clicking pictures before the iconic building; they can just not use the pictures for commercial purposes without a license from IHCL.

The adverse impact of this move will be felt by photographers who will now have to pay a licensing fee to the IHCL even if they take a picture of the building and sell it to a magazine.

The reasons as to why the building was registered as a trademarkhave beenstatedearlier andare notrepeated here for the sake of brevity. However to prove that dilution has occurred, the claimant must show that when the general public encounters the mark in almost any context, it associates the mark at least initially with the mark's owner. The IHCL can therefore justify the move of securing a trademark registration for the Taj Mahal Palace Hotel on the grounds that they did it not only to protect the building's architecture and distinctiveness but also to protect the image of the iconic building from dilution by blurring or tarnishment.

CONCLUSION

Being the first Indian building to get a trademark, the Taj Mahal Palace Hotel has certainly ushered in a new era for the development of Intellectual Property in this field of securing trademark protection landmarks and there can be an exciting road ahead for companies and entities who wish to trademark their famous structures to protect its distinctivity.

Therefore, it is safe to conclude that the move of IHCL in securing trademark registration for easily the most famous building in Mumbai was a smart one.

Footnotes

1 134 F.3d 749 (6th Cir. Ohio 1998)

2 http://ttabvue.uspto.gov/ttabvue/ttabvue-91204122-OPP-95.pdf

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